AI cannot be an inventor of a patent, rules UK Supreme Court

In a recent judgement by the UK Supreme Court in the case of Thaler v. Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49, the Court held that an “invention” under the purview of Section 7 of the United Kingdom Patent Act, 1977 must be invented by a “human”.

The court unanimously denied a petition from Dr. Stephen Thaler (a US-based developer and founder of the AI system DABUS), who had claimed that DABUS had autonomously created a food or drink container and a light beacon and that he is entitled to rights over its inventions. This decision concludes prolonged legal proceedings that started in 2019 when the United Kingdom Intellectual Property Office informed Dr. Stephen Thaler that under the United Kingdom Patent Act, 1977, only a natural person or company could be registered as inventors, not software.

The court, however, did not delve into the fact if DABUS did in fact invent the food container and light. The background of this judgement can be understood when Dr. Stephen Thaler submitted patent applications in 2018 for a food or beverage container as well as a light beacon to draw attention in an emergency. Neither application named a human ‘inventor,’ and no additional document naming a human inventor was ever submitted. The inventorship declarations submitted on mandated forms reflected Dr. Thaler’s conviction that each of the inventions was developed by the AI of a machine named DABUS and that Dr. Thaler had obtained the authority to issue the patents due to his ownership of that machine. However, the IPO concluded in December 2019 that the expert was unable to officially register DABUS as the inventor in patent applications because it was not a person. The decision was upheld by the high court and the court of appeal in July 2020 and July 2021. After a hearing in March, a panel of five supreme court justices have unanimously dismissed Thaler’s case.

Lord Kitchin concurred with Lords Hodge, Hamblen, Leggatt, and Richards that the IPO “was correct to conclude that DABUS is not and was not the inventor of any new product or process described in the patent applications.” The Court ruled that the IPO was correct to determine that Thaler’s patent applications should be considered “withdrawn” under patent rules because “he failed to identify any person or persons whom he believed to be the inventor or inventors of the inventions described in the applications.” The Supreme Court did, however, point out that Thaler’s fixation on DABUS being the inventor was a crucial failing. If Thaler had argued that he was the inventor and that DABUS was only a tool, the court’s decision might have been different, recognizing the basic legality of utilising AI tools in the creative process.

Disclaimer: The views and opinions expressed in this article are those of the authors and do not necessarily reflect the official policy or position of any agency of the United Kingdom courts. Examples of analysis performed within this article are only examples. They should not be utilized in real-world analytic products as they are based only on very limited and dated open-source information. Assumptions made within the analysis are not reflective of the position of any United Kingdom courts.